Pogrebinsky, Vladimir et al.

Patent Trials and Appeals Board

Sep 26, 2019

14455791 - (D) (P.T.A.B. Sep. 26, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/455,791 08/08/2014 Vladimir Pogrebinsky 341604.01 7523
69316 7590 09/30/2019
MICROSOFT CORPORATION
ONE MICROSOFT WAY
REDMOND, WA 98052
EXAMINER
KHATTAR, RAJESH
ART UNIT PAPER NUMBER
3693
NOTIFICATION DATE DELIVERY MODE
09/30/2019 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
chriochs@microsoft.com
usdocket@microsoft.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte VLADIMIR POGREBINSKY, SATA BUSAYARAT, and
JAMEEL A. GBAJABIAMILA
____________

Appeal 2018-007944
Application 14/455,791
Technology Center 3600
____________

Before JOHN A. JEFFERY, DENISE M. POTHIER, and
JUSTIN BUSCH, Administrative Patent Judges.

POTHIER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1,2 appeals under 35 U.S.C. § 134(a) from the Examiner’s
decision to reject claims 21, 22, 24–29, 31–36, and 38–40. Appeal Br. 1.
Claims 1–20, 23, 30, and 37 have been canceled. Final Act. 2; Appeal Br.
26, 28, 30 (Claims App’x).
We AFFIRM.

1 Throughout this opinion, we refer to the Final Action (Final Act.) mailed
October 31, 2017; the Appeal Brief (Appeal Br.) filed May 4, 2018; the
Examiner’s Answer (Ans.) mailed June 8, 2018; and the Reply Brief (Reply
Br.) filed July 30, 2018.
2 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as Microsoft
Technology Licensing, LLC. Appeal Br. 1.
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Invention
Appellant’s invention relates to a subscription management service
that allows subscribers to create their own organizational plans defining how
services are offered to sub-organizations. Id. ¶¶ 6, 34–35. In one
embodiment, a provider (e.g., 301), such as a datacenter or cloud service
administrator, subscribes to a zero-day plan that provides an initial set of
cloud services and resources. Id. ¶¶ 24, 42, Fig. 3. The provider may define
reseller plans that resellers (e.g., 302) may subscribe to and use. Id. ¶¶ 24,
26, Fig. 3. The reseller plans provide various service configurations,
resources, security, authentication, and fee structures available from the
provider. Id. ¶ 24. Each reseller, in turn, may define tenant plans offered to
tenants (e.g., 303), which are end users, to access desired services of the
provider. Id. ¶¶ 26–27, Fig. 3. Similar to the reseller plans, the tenant plans
provide various service configurations, resources, security, authentication,
and fee structures. Id. ¶ 26. Resellers may track each tenant’s use of the
desired services and resources for billing. Id. ¶ 26.
Independent claim 28 exemplifies the claims at issue and reads as
follows:
28. A method implemented by a computer with a
processor in a datacenter, the method comprising:
registering an organizational subscription with a
datacenter provider of the datacenter, the organization
subscription allowing an organization to consume a set of cloud
services provided by the datacenter;
installing applications in the datacenter permitted by the
organizational subscription, execution of the installed
applications in the datacenter providing additional cloud
services accessible only to tenants of the organization;
in response to input from an administrator of the
organization, generating data representing multiple customized
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organization plans with corresponding organizational quotas,
the created organization plans individually comprising a subset
of the cloud services provided by the datacenter and the
additional cloud services consumable by the tenants of the
organization according to the corresponding organizational
quotas, wherein one or more of the additional cloud services is
included in one or more of the organizational plans;
receiving data representing subscription requests from
individual tenants of the organization to subscribe to one of the
created organizational plans; and
in response to receiving the subscription requests,
registering tenant subscriptions that allow the individual tenants
to access the corresponding subsets of the cloud services
included in the organizational plans; and
tracking and limiting tenant usage of the subsets of the
cloud services corresponding to the tenant subscriptions the
individual tenants subscribed to, thereby allowing the
individual tenants of the organization to utilize one or more of
the cloud services provided by the datacenter or the additional
cloud services according to the customized organizational
plans.

Appeal Br. 27–28 (Claims App’x).

THE SIGNAL PER SE REJECTION
Claim 21 recites a computing system with a computer-readable
storage media having instructions that, when executed by one or more
processors, cause the processor(s) to perform steps similar to those in claim
28. Appeal Br. 25–26 (Claims App’x). Independent claim 21 is rejected
under 35 U.S.C. § 101 as covering a signal per se. Final Act. 5 (citing the
Manual of Patent Examining Procedure (MPEP) § 2111.01 and In re
Nuijten, 500 F.3d 1346, 1356–57 (Fed. Cir. 2007)). Appellant does not
contest this rejection and authorizes the Examiner “to insert ‘non-transitory’
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prior to ‘computer-readable storage media’” recited in claim 21. See Appeal
Br. 24. For these reasons, we summarily sustain this rejection. See MPEP
§ 1205.02; see also Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010)
(precedential) (“If an appellant fails to present arguments on a particular
issue—or more broadly, on a particular rejection—the Board will not, as a
general matter, unilaterally review those uncontested aspects of the
rejection.”).

THE PATENT-ELIGIBILITY REJECTION
Claims 21, 22, 24–29, 31–36, and 38–40 are rejected under 35 U.S.C.
§ 101 as being directed to a judicial exception without significantly more.
Final Act. 2–4. The Examiner determined that the claims are directed to an
abstract idea, namely managing organizational subscription plans, which is a
fundamental economic practice. See id. at 2–3; Ans. 4. The Examiner
added that the claims do not include additional elements or limitations
individually or in combination that are sufficient to amount to significantly
more than the judicial exception. Final Act. 3–4; see Ans. 3–6. Based on
these determinations, the Examiner concluded that the claims are ineligible
under § 101. Final Act. 2–4.
Appellant argues that the claimed invention should not be viewed
merely as a fundamental economic practice because the rejection
“unreasonably abstracted features . . . and misidentified similar inventive
concepts that the court[s] have deemed to be abstract ideas.” Appeal Br. 12;
see id. at 11–13; Reply Br. 1–3. According to Appellant, the claims recite
elements directed to specific improvements in the capabilities of a datacenter
providing cloud computing services. Id. at 14–15 (citing Spec. ¶¶ 6, 29–36).
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ISSUE
Under § 101, has the Examiner erred in rejecting the claims by
determining that the claims are directed to judicially excepted, patent
ineligible subject matter?

PRINCIPLES OF LAW
An invention is patent eligible if it claims a “new and useful process,
machine, manufacture, or composition of matter.” 35 U.S.C. § 101.
However, the Supreme Court has long interpreted 35 U.S.C. § 101 to include
implicit exceptions: “[L]aws of nature, natural phenomena, and abstract
ideas” are not patentable. Mayo Collaborative Servs. v. Prometheus Labs.,
Inc., 566 U.S. 66, 70 (2012) (brackets in original) (citing Diamond v. Diehr,
450 U.S. 175, 185 (1981)).
In determining whether a claim falls within an excluded category, we
are guided by the Supreme Court’s two-step framework, described in Mayo
and Alice. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 217–18
(2014) (citing Mayo, 566 U.S. at 75–77). In accordance with that
framework, we first determine what concept the claim is “directed to.” See
Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the
concept of intermediated settlement, i.e., the use of a third party to mitigate
settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010)
(“Claims 1 and 4 in petitioners’ application explain the basic concept of
hedging, or protecting against risk.”).
Concepts determined to be abstract ideas, and thus patent ineligible,
include certain methods of organizing human activity, such as fundamental
economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611);
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mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and
mental processes (Gottschalk v. Benson, 409 U.S. 63, 69 (1972)). Concepts
determined to be patent eligible include physical and chemical processes,
such as “molding of rubber products” (Diehr, 450 U.S. at 193); “tanning,
dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores”
(id. at 182 n.7 (quoting Corning v. Burden, 56 U.S. (15 How.) 252, 267–68
(1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane
v. Deener, 94 U.S. 780, 785 (1876))).
In Diehr, the claim at issue recited a mathematical formula, but the
Supreme Court held that “[a] claim drawn to subject matter otherwise
statutory does not become nonstatutory simply because it uses a
mathematical formula.” Diehr, 450 U.S. at 187; see also id. at 191 (“We
view respondents’ claims as nothing more than a process for molding rubber
products and not as an attempt to patent a mathematical formula.”). That
said, the Supreme Court also indicated that a claim “seeking patent
protection for that formula in the abstract . . . is not accorded the protection
of our patent laws, . . . and this principle cannot be circumvented by
attempting to limit the use of the formula to a particular technological
environment.” Id. (citing Benson and Flook); see, e.g., id. at 187 (“It is now
commonplace that an application of a law of nature or mathematical formula
to a known structure or process may well be deserving of patent
protection.”).
If the claim is “directed to” an abstract idea, we turn to the second
step of the Alice and Mayo framework, where “we must examine the
elements of the claim to determine whether it contains an ‘inventive
concept’ sufficient to ‘transform’ the claimed abstract idea into a patent-
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eligible application.” Alice, 573 U.S. at 221 (quotation marks omitted). “A
claim that recites an abstract idea must include ‘additional features’ to
ensure ‘that the [claim] is more than a drafting effort designed to
monopolize the [abstract idea].’” Id. (quoting Mayo, 566 U.S. at 77).
“[M]erely requir[ing] generic computer implementation[] fail[s] to transform
that abstract idea into a patent-eligible invention.” Id.
In January 2019, the USPTO published revised guidance on the
application of § 101. 2019 Revised Patent Subject Matter Eligibility
Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (“Revised Guidance”). Under that
guidance, we first look to whether the claim recites:
(1) any judicial exceptions, including certain groupings of abstract
ideas (i.e., mathematical concepts, certain methods of organizing
human activities such as a fundamental economic practice, or mental
processes) (Revised Guidance, 84 Fed. Reg. at 52–54) (“Revised Step
2A - Prong 1”); and
(2) additional elements that integrate the judicial exception into a
practical application (see MPEP §§ 2106.05(a)–(c), (e)–(h)) (Revised
Guidance, 84 Fed. Reg. at 53–55) (“Revised Step 2A - Prong 2”).
Only if a claim (1) recites a judicial exception, and (2) does not integrate that
exception into a practical application, do we then look to whether the claim:
(3) adds a specific limitation beyond the judicial exception that is not
well-understood, routine, and conventional in the field (see MPEP
§ 2106.05(d)); or
(4) simply appends well-understood, routine, and conventional
activities previously known to the industry, specified at a high level of
generality, to the judicial exception.
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See Revised Guidance, 84 Fed. Reg. at 56 (“Step 2B”).

ANALYSIS
CLAIMS 21, 22, 24, 28, 29, 31, 35, 36, AND 38
Appellant argues claims 21, 22, 24, 28, 29, 31, 35, 36, and 38 as a
group. See Appeal Br. 12–16.3 We select independent claim 28 as
representative. See 37 C.F.R. § 41.37(c)(1)(iv). Claim 28’s subject matter
falls within one of a statutory category of patentable subject matter—a
process. See Revised Guidance, 84 Fed. Reg. at 53–54.
Alice Step One
Despite falling within a statutory category under § 101, we determine
whether claim 28 as a whole is directed to a judicial exception, namely an
abstract idea. See Alice, 573 U.S. at 217. To this end, we determine (1)
whether claim 28 recites a judicial exception (Revised Step 2A - Prong 1)
and, if so, (2) whether the identified judicial exception is integrated into a
practical application (Revised Step 2A – Prong 2). See Revised Guidance,
84 Fed. Reg. at 52–55. If both elements are satisfied, the claim is directed to
a judicial exception under the first step of the Alice/Mayo test. See id.
Revised Step 2A - Prong 1
In Revised Step 2A - Prong 1, we identify the claim’s specific
limitations that recite a judicial exception, and determine whether the
identified limitations fall within certain subject matter groupings, namely
(a) mathematical concepts (mathematical relationships, formulas, and

3 Appellant separately argues each of independent claims 28 and 35. Appeal
Br. 22–24. However, Appellant states these claims are eligible “[f]or at least
the reasons discussed above with respect to claim 21.” Id.
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calculations); (b) certain methods of organizing human activity (e.g.,
fundamental economic practices, commercial or legal interactions, and
managing personal behavior or interactions between people); or (c) mental
processes (e.g., concepts performed in the human mind including an
observation, evaluation, judgment, or opinion). See Revised Guidance, 84
Fed. Reg. at 52.
We agree with the Examiner (see Final Act. 2) that claim 28 recites at
least one judicial exception. Claim 28 recites the following steps:
(A) “registering an organizational subscription with a . . . provider . . . , the
organization subscription allowing an organization to consume a set of . . .
services provided by the datacenter,” (B) “installing applications in the
datacenter permitted by the organizational subscription, execution of the
installed applications in the datacenter providing additional cloud services
accessible only to tenants of the organization,” (C)
in response to input from an administrator of the organization,
generating data representing multiple customized organization
plans with corresponding organizational quotas, the created
organization plans individually comprising a subset of the . . .
services provided by the datacenter and the additional . . .
services consumable by the tenants of the organization
according to the corresponding organizational quotas, wherein
one or more of the additional . . . services is included in one or
more of the organizational plans;

(D) “receiving data representing subscription requests from individual
tenants of the organization to subscribe to one of the created organizational
plans,” (E) “in response to receiving the subscription requests, registering
tenant subscriptions that allow the individual tenants to access the
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corresponding subsets of the . . . services included in the organizational
plans,” (F)
tracking and limiting tenant usage of the subsets of the . . .
services corresponding to the tenant subscriptions the individual
tenants subscribed to, thereby allowing the individual tenants of
the organization to utilize one or more of the . . . services
provided by the datacenter or the additional . . . services
according to the customized organizational plans.

Appeal Br. 27–28 (Claims App’x) (“steps (A)–(F)”).
Steps (A) and (C)–(F), under their broadest reasonable interpretation,
recite techniques for creating and managing organizational subscription
service plans by an intermediary as the Examiner identified because these
steps would ordinarily take place when an intermediary generates and
manages subscription service plans for end users. See id.; see Final Act. 2
(stating claim 28 is “directed to the abstract idea of [the] management of [an]
organizational subscription plan.”); see also Spec. ¶ 6. Step (A) recites a
preliminary activity an intermediary would take ordinarily (i.e., registering
with the provider) prior to creating organizational subscription service plans
for tenants so that tenants can access the provider’s services. Appeal Br. 27
(Claims App’x). For example, T-Mobile (e.g., a datacenter provider)
provides services (e.g., network providing voice and data services) to
Consumer Cellular (e.g., organization), which is a T-Mobile mobile virtual
network operator (MVNO) or reseller,4 to consume upon collecting
registration information from Consumer Cellular.5 Similarly, step (C)

4 BESTmvno, https://bestmvno.com/mvnos/#what-is-an-mvno,
https://bestmvno.com/compare/t-mobile-mvnos/ (last visited Sept. 24, 2019).
5 BESTmvno, https://bestmvno.com/mvnos/consumer-cellular/ (last visited
Sept. 24, 2019).
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recites another activity, which would ordinarily take place by an
intermediary after registering with the provider, that generates or creates
customized service plans for tenants to access (e.g., services and additional
services) available from the provider and intermediary. Id. For example,
Consumer Cellular (e.g., the organization) repackages T-Mobile’s (e.g., the
datacenter provider) services and adds additional services (e.g., various
pricing for voice, text, and data amounts) to generate multiple service plans
(e.g., multiple customized organization plans with corresponding
organizational quotas that comprise a subset of services provided by the
datacenter provider).6
Step (D) recites another preliminary activity which would ordinarily
take place by a tenant (i.e., receiving a tenant subscription request for an
organization’s service plan) prior to providing tenants with access to the
requested plans. Id. For example, AARP end users (e.g., tenants) contact
Consumer Cellular (e.g., the organization) and chose a 250 minute talk plan
with 2 GB per month at a certain monthly price, requesting the AARP five
percent discount.7 Moreover, step (E) recites another initial activity which
would ordinarily take place by an intermediary to manage subscription
service plans (e.g., registering tenants with the organization) prior to
tracking the tenant’s usage of the provided services corresponding to the
subset of services in the requested plans. Id. For example, Consumer

6 Consumer Cellular Inc., https://www.consumercellular.com/Plans (last
visited Sept. 24, 2019).
7 Consumer Cellular Inc., https://www.consumercellular.com/Plans,
https://www.consumercellular.com/WhyUs#aarp (indicating Consumer
Cellular has been “an approved AARP provider for over 10 years” and
offers “a 5% discount off your monthly fees and usage charges”) (last visited
Sept. 24, 2019).
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Cellular provides services (e.g., certain voice, data, and text services at
various prices) for AARP end users (e.g., tenants) to consume upon
collecting registration data from its tenants.8 Lastly, step (F) recites an
activity which would ordinary take place by an intermediary who manages
its subscription service plans to allow tenants to use services according to
the tenant’s subscription. For example, Consumer Cellular tracks an AARP
end user’s voice/data usage and limits the user’s voice/data usage to
250minutes/2 GB every month (e.g., a tenant subscription), which permits
the tenant to use the services (e.g., voice, text, and data) provided by
T-Mobile (e.g., the datacenter) or Consumer Cellular.
As another example, utility companies (e.g., Dominion Energy) act as
an organizational subscriber to consume services of providers (e.g., fossil
fuel and renewable power providers),9 to create customized organization
plans with services and additional services to its tenants (e.g., offer certain
rates for certain months/time of day for power dependent on usage (e.g.,
kWh), plus certain surcharges and taxes),10 and to track/limit a tenant’s
usage of their subscribed services (e.g., subscriber of the Smart Cooling
Rewards)11 as the above noted steps (A) and (C)–(F) recite.

8 Consumer Cellular Inc.,
https://shopping.consumercellular.com/cart/checkout/summary (where an
AARP end user purchases the noted plan and provides contact/billing
information) (last visited Sept. 24, 2019).
9 Dominion Energy, Inc., https://www.dominionenergy.com/suppliers (last
visited Sept. 24, 2019).
10 Dominion Energy, Inc., https://www.dominionenergy.com/home-and-
small-business/rates-and-regulation (last visited Sept. 24, 2019).
11 Dominion Energy, Inc., https://www.dominionenergy.com/home-and-
small-business/energy-conservation-programs/smart-cooling-rewards (last
visited Sept. 24, 2019).
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Steps (A) and (C)–(F) involve certain methods of organizing human
activity, including fundamental business practices (e.g., creating and
managing organizational service plans) or commercial sales and marketing
interactions (e.g., an organization generating customized organization plans
to which the organization’s tenants can subscribe). See Spec. ¶¶ 6, 24–28,
35, Figs. 1, 3; see also Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d
1306, 1333 (Fed. Cir. 2015) (holding the claims are directed to “determining
a price, using organizational and product group hierarchies, in the same way
that the claims in Alice were directed to the abstract idea of intermediated
settlement, and the claims in Bilski were directed to the abstract idea of risk
hedging”); see LendingTree, LLC v. Zillow, Inc., 656 F. App’x 991, 996
(Fed. Cir. 2016) (unpublished) (holding a claim reciting a loan-application
clearinghouse, including allowing an Internet user to access services of
lending institutions, as being an automation of a fundamental economic
practice). Accordingly, at least steps (A) and (C)–(F) recite a fundamental
business practice or sales interactions, which are certain methods of
organizing human activity identified in the Revised Guidance, and thus
recite an abstract idea. See 84 Fed. Reg. at 52.
Steps (A) and (C)–(E) further recite processes that can occur in a
human’s mind (or through pen and paper). Appeal Br. 27 (Claims App’x).
For example, a person can register the organizational and tenant
subscriptions (e.g., steps (B) and (E) by recording them in a subscription
book using pen and paper). As another example, a person can observe (or
record with pen and paper) an administrator’s input as step (C) recites, and
then generate multiple customized organizational plans mentally (or using
pen and paper) by evaluating the services provided by the datacenter as step
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(C) also recites. Similarly, a person can observe mentally (or with pen and
paper) the subscription request made by the tenants as step (D) recites.
Thus, with the exception of generic computer-implementation recited in
claim 21, there is nothing in steps (A) and (C)–(E) that forecloses the steps
from being performed mentally or with pen and paper. See CyberSource
Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) (“That
purely mental processes can be unpatentable, even when performed by a
computer, was precisely the holding of the Supreme Court in Gottschalk v.
Benson”); see also Mortg. Grader Inc. v. First Choice Loan Servs., Inc., 811
F.3d 1314, 1318, 1324 (Fed. Cir. 2016) (holding a claim reciting, among
other things, allowing a borrower anonymously to access loan services of
different lenders after a third party calculates the borrower’s credit grading
to be mental processes); Benson, 409 U.S. at 67 (indicating converting BCD
numbers to pure binary numbers can be done mentally and that “mental
processes . . . are not patentable, as they are the basics tools of scientific and
technological work.”).
For the above reasons, we conclude claim 28 as a whole is directed to
certain methods of organizing human activity and mental processes, which
are abstract ideas identified in the Revised Guidance. See Revised
Guidance, 84 Fed. Reg. at 52. We thus disagree with Appellant that there
(1) are not concepts the courts have deemed to be a judicial exception
similar to claim 28 (or claim 21) as explained above (see also Final Act. 2–
3; see also Ans. 4), or (2) were no subscription services prior to the advent
of the Internet and cloud computing analogous to the recited services in
claim 28 (or claim 21).
Accordingly, we determine claim 28 recites an abstract idea.
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Revised Step 2A - Prong 2
Because claim 28 recites an abstract idea, we must determine whether
the abstract idea is integrated into a practical application, namely whether
the claim applies, relies on, or uses the abstract idea in a manner that
imposes a meaningful limit on the abstract idea, such that the claim is more
than a drafting effort designed to monopolize the abstract idea. See Revised
Guidance, 84 Fed. Reg. at 53. We (1) identify whether there are any
additional, recited elements beyond the judicial exception, and (2) evaluate
those elements individually and collectively to determine whether they
integrate the exception into a practical application. See id., 84 Fed. Reg. at
54–55.
The additionally recited elements beyond the above-identified judicial
exceptions in independent claims 28 and 35 are “a computer with a
processor in a datacenter,” “cloud” services, and step (B). Appeal Br. 27–30
(Claims App’x). Independent claim 21 further recites “one or more
computer-readable storage media having stored thereon computer-
executable instructions that, when executed by the one or more processors,
cause the processors to” perform the judicial exceptions discussed
previously. Id. at 25–26 (Claims App’x); see Final Act. 4. When
considering these elements individually or in combination, we determine
they do not integrate the above-identified judicial exceptions into a practical
application.
Contrary to Appellant’s assertions (see Appeal Br. 14–16; Reply Br.
4), the identified additional elements beyond the identified judicial
exceptions do not reflect an improvement in a computer’s functioning or an
improvement to other technology or technical field as set forth in MPEP
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§ 2106.05(a) and the Revised Guidance, 84 Fed. Reg. at 55. See Final Act.
4; Ans. 4. Here, consistent with the disclosure as discussed below, the
additionally recited elements merely automate certain methods of organizing
human activity or mental processes using generic computer elements. These
elements are tools that perform the above-identified abstract idea but do not
constitute a patentable improvement in computer technology. See Credit
Acceptance Corp. v. Westlake Servs., 859 F.3d 1044, 1055 (Fed. Cir. 2017);
see also Alice, 573 U.S. at 221, 223.
For example, claim 28 does not recite a computer or technological
improvement to the recited “computer with a processor in a datacenter”
(Appeal Br. 27 (Claims App’x)) and claim 21 does not recite a technological
improvement in the recited “computing system, comprising: one or more
processors; [and] one or more computer-readable storage media having
stored thereon computer-executable instructions” (id. at 25–26 (Claims
App’x)). Nor do these claims recite an improvement in their computer
functionality. Instead, these elements are merely used to implement the
above identified abstract idea. See id. at 25–28 (Claims App’x). The written
description further supports this conclusion. See Spec. ¶¶ 18 (describing
servers 201 as computing devices and showing one or more host processors
on each server 201),
56–57 (describing a system in a datacenter comprises one or more
processors that execute instruction to provide datacenter management
services and one or more computer-readable storage media), Fig. 2 (showing
one or more host processors on each server 201).
Thus, at best, the computer (claims 28 and 35), computing system
(claim 21), the processors (claims 21, 28, and 35), and datacenter (claims 21,
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28, and 35) are used as tool to implement steps (A) and (C)–(F). Appeal Br.
25–30 (Claims App’x).
Also, claim 28 does not recite a computer or technological
improvement in the recited “cloud” services or its computing functionality.
The disclosure describes the recited “cloud” services as generally a type of
service that is in a cloud-based environment. Spec. ¶¶ 1, 4, 16, 19, 23, Figs.
1–2. That is, claim 28’s additional recitations do no more than generally
link the use of a judicial exception to a particular technological environment
or field of use without reciting an improving in that technological field (i.e.,
cloud services). See Bilski, 561 U.S. at 612 (citing Flook and discussing
limiting an abstract idea to a field of use did not make the concept
patentable); see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245,
1256 (Fed. Cir. 2014) (noting the claims recited various computer hardware
elements but were directed to performing an abstract business practice on the
Internet or using a conventional computer, which is not patent-eligible); see
Nextpoint, Inc. v. Hewlett-Packard Co., 227 F.Supp.3d 963, 968–69 (N.D.
Ill. 2016), aff’d, 680 F. App’x 1009 (Fed. Cir. 2017) (recognizing the
inventor does not claim to have invented “cloud computing” or any new
component or feature whose particular use in the claimed method improves
on legacy technologies).
Thus, we are not persuaded by Appellant’s contention that the claimed
invention is eligible because it is necessarily rooted in computer technology
to overcome a problem as was the case in DDR. See Appeal Br. 17–18
(citing DDR). Here, allowing an organization’s tenants to each access a
subset of a datacenter’s cloud services as claim 28 recites is not necessarily
rooted in computer technology as previously explained. Moreover,
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Appellant has not demonstrated adequately that the claimed invention solves
a challenge specifically arising in the realm of computer networks as in
DDR. At best, claim 21 improves a fundamental business practice or
commercial interaction, which is directed to an abstract idea. Accord Final
Act. 7–8; Ans. 6.
Moreover, the disclosure describes claim 28’s step (B) that installs
applications in a datacenter generally as merely software or a tool to provide
additional cloud services accessible to tenants of an organization. See Credit
Acceptance Corp., 859 F.3d at 1056 (stating “merely ‘configur[ing]’ generic
computers in order to ‘supplant and enhance’ an otherwise abstract manual
process is precisely the sort of invention that the Alice Court deemed
ineligible . . . .”) (citing Alice, 573 U.S. at 220–25); id. at 1055 (discussing
using generic computes to automate a manual process). More specifically,
this step does not limit claim 28’s process to any particular software or
algorithm. See Spec. ¶¶ 20–21, 30. Additionally, step (B) can be considered
insignificant pre-solution activity—installing generic software (i.e.,
applications) in a datacenter, which allows the organization to provide cloud
services to the tenants. See Bilski, 561 U.S. at 610–11; accord Revised
Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(g)). Thus, step (B)
does not integrate the judicial exception into a practical application for this
additional reason.
That the claimed invention uses an intermediary (e.g., the recited
organization, which acts as a reseller of the provider’s cloud services (see
Spec. ¶¶ 4, 6, 27, Fig. 3)) to perform any of steps (A)–(F) is of no
consequence here, for it is well settled that using a computer-based, third-
party intermediary to facilitate transactions is a method of organizing human
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activity. See Alice, 573 U.S. at 220 (noting that “[t]he use of a third-party
intermediary (or ‘clearing house’) is also a building block of the modern
economy.”); see also LendingTree, 656 F. App’x at 996 (holding claims
merely using “a broker (i.e., a computer program on a loan-processing
computer . . .) to organize the process is of no consequence” because the use
of a third-party intermediary is a building block of the modern economy)
(citation omitted).
For the above reasons, when considering the additional elements
individually or in combination, they are no more than tools that perform the
above-identified abstract idea and, therefore, do not integrate the abstract
idea into a practical application.
To the extent that Appellant contends the recited steps (A)–(F) in
claim 28 are “directed to specific improvements in the capabilities of a
datacenter providing cloud services” (Appeal Br. 14), there is insufficient
persuasive evidence on this record to substantiate this contention. For
example, claim 28 is not limited to any particular cloud services or virtual
technology as argued. Id. at 15. Also, as noted above, we do not see a
specific improvement in the way the recited additional elements operate
when performing claim steps (A)–(F) or an improvement to the computer’s
functionality. See id. at 14–16. Rather, claim 28 at best improves an
abstract idea of how to provide and manage organizational/tenant
subscription service plans within a cloud-computing environment. See
Appeal Br. 27–28 (Claims App’x); see Spec. ¶ 6.
Appellant argues that the claimed invention improves a computer’s
functionality such as in Enfish LLC v. Microsoft Corp., 822 F.3d 1327 (Fed.
Cir. 2016). See Appeal Br. 14–15. We disagree. The claims in Enfish were
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directed to an improved database configuration, including a self-referential
table, which permitted faster searching for data. See Enfish, 822 F.3d at
1330–33, 1336. In contrast, as previously discussed, claim 28 (or claim 21)
does not recite any particular database configuration or an advance in a data
structure like Enfish that improves a computer’s functionality. See id. at
1336–37, 1339 (noting that a “self-referential table for a computer database”
improved the computer functionality, including the way the computer stored
and retrieved data from memory).
Nor are we persuaded by Appellant’s comparison of claim 28 (and
claim 21) to the claims in Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299,
1303 (Fed. Cir. 2018). See Appeal Br. 15–16. In Finjan, the court found
that claims directed to a behavior-based virus scan constituted an
improvement in computer functionality over the “traditional, ‘code-
matching’ virus scans.” Finjan, 879 F.3d at 1304. The court determined
that the claimed method employs a new kind of file, allows access to be
tailored for different users, and allows the system to accumulate and use
newly available, behavior-based information about potential threats. Id. at
1305. The court ultimately held that the claims are “directed to a non-
abstract improvement in computer functionality, rather than the abstract idea
of computer security,” and “recite specific steps generating a security profile
that identifies suspicious code and linking it to a downloadable that
accomplish the desired result.” Id. Unlike the claims of Finjan, claim 28 (or
claim 21) fails to employ a newly generated file containing security profile
in a downloadable, and does not use a new file to enable a computer security
system to improve on or add a computer functionality by reciting specific
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steps accomplishing the desired security results. Thus, we are not persuaded
claim 28 is sufficiently analogous to the claims in Finjan.
Appellant’s reliance on the decision in Core Wireless Licensing
S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356, 1362 (Fed. Cir. 2018) is
equally unavailing. See Appeal Br. 16. The claim in Core Wireless was
directed to an improvement in the functioning of computers, particularly
those with small screens. Core Wireless, 880 F.3d at 1363 (finding the
improvement was in “the efficiency of using the electronic device by
bringing together ‘a limited list of common functions and commonly
accessed stored data,’ which can be accessed directly from the main
menu.”).12 That is not the case here. Despite Appellant’s arguments to the
contrary (see Appeal Br. 16), claim 28 (or claim 21) is not necessarily rooted
in computer technology in the sense contemplated by Core Wireless where
the claimed invention improved the computer’s functioning. Although
Appellant’s invention uses computer-based components, the claimed
invention does not improve those components, a computer’s functioning, or
improve another technology or technical field. Rather, as previously noted,
claim 28 recites at best an improvement in the abstract idea of providing and
managing subscriber service plans, and generally links the identified judicial
exceptions to a particular field of use (e.g., cloud-computing environment).
Given the record, claim 28’s additional elements beyond the identified
judicial exceptions are not shown to improve a computer itself, computer

12 Compare id., with Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378,
1385 (Fed. Cir. 2019) (finding claims that recite a purportedly new
arrangement of generic information to assist traders in processing
information more quickly do not improve the functioning of a computer,
make it operate more efficiently, or solve any technological problem).
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functionality, or another technology or technical field. See Revised
Guidance, 84 Fed. Reg. at 55 (citing MPEP § 2106.05(a)). Nor has
Appellant demonstrated that claim 28’s additional elements (1) implement
the identified judicial exception with or use the judicial exception in
conjunction with a particular machine or transformation or (2) apply or use
the judicial exception in some other meaningful beyond generally linking the
use of the judicial exception to a particular technological environment. See
id. (citing MPEP §§ 2106.05(a), (c), (e)).
For the above-stated reasons, we determine the additional elements
recited in claim 28 beyond the judicial exception, whether considered alone
or in combination, are not integrated into a practical application.
Alice Step Two, Step 2B
Because we determine claim 28 does not integrate the recited judicial
exception into a practical application, we need to consider whether the
additional elements add a specific limitation or combination of limitations
that are not well-understood, routine, or conventional activity in the field.
See Revised Guidance, 84 Fed. Reg. at 56. If so, this indicates that an
inventive concept may be present. If, instead, the additional elements
simply append well-understood, routine, and conventional activities
previously known to the industry, specified at a high level of generality, to
the judicial exceptions, this indicates that an inventive concept may not be
present. Id.
The Examiner found certain limitations in claim 28 (e.g., one or more
processors) perform their routine, well-understood, and conventional
functions. Final Act. 4 (citing Spec. ¶ 18 and Alice), 6, 8. Appellant asserts
the Examiner’s reliance on paragraph 14 of the Specification is erroneous at
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least because the Examiner failed to articulate which part of paragraph 14
teaches well-understood, routine, and conventional functions of a computing
device. Reply Br. 3 (quoting Answer 4). We are not persuaded of error.
To be sure, the Examiner must show with supporting facts that certain
claim elements are well-understood, routine, and conventional where such a
finding is made. See Berkheimer v. HP Inc., 881 F.3d 1360, 1369 (Fed. Cir.
2018) (noting that “[whether] something is well-understood, routine, and
conventional to a skilled artisan at the time of the patent is a factual
determination.”); see also April 19, 2018, Memorandum from Robert W.
Bahr, Deputy Commissioner for Patent Examination Policy to the Patent
Examining Corps, entitled “Changes in Examination Procedure Pertaining to
Subject Matter Eligibility, Recent Subject Matter Eligibility Decision
(Berkheimer v. HP, Inc.)” (“Berkheimer Memo.”). According to the
Berkheimer Memorandum, Examiners must provide specific types of
evidence to support a finding that an additional element of a claim is well-
understood, routine, and conventional. Berkheimer Memo at 3–4.
The Examiner satisfied these requirements by providing citations to
the Specification. See Final Act. 4 (citing Spec. ¶ 18), Ans. 4 (additionally
citing Spec. ¶ 14); see also Berkheimer Memo. 3–4 (informing examiners to
provide one or more of four specific types of evidence including “a citation
to the Specification or statement made by applicant during prosecution that
demonstrates the well-understood, routine, conventional nature of the
additional element.”). The Examiner additionally cited to Alice for support.
Final Act. 4; Alice, 573 U.S. at 225 (noting a computer (1) creating and
maintaining “shadow” accounts (e.g., electronic recordkeeping), (2)
obtaining data, and (3) issuing automated instructions are well-understood,
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routine, and conventional activities); see also Mortg. Grader, 811 F.3d at
1324–25 (noting that components such an “interface,” “network,” and
“database” are generic computer components that do not satisfy the
inventive concept requirement).
We further add other passages in the Specification describe the
additional elements in claims 21 and 28, such as the recited “computer with
a processor,” the recited “computing system comprising: one or more
processors,” “one or more computer-readable storage media having stored
thereon computer-executable instructions,” the recited “cloud” service, and
the “installed applications” (i.e., the recited step (B)), generically or as
previously known. See Spec. ¶¶ 1 (describing cloud computing in the
Background section of the Specification), 3–4 (describing in the Background
section existing cloud systems provide plans to subscribers and a datacenter
is used to provide the cloud services to subscribers), 16–17, 19, 23
(describing datacenters and cloud computing services at a high level of
generality), 56 (describing processors and storage media at a high level of
generality), 20–21, 30, 57–60, 62 (describing instructions and installed
applications at a high level of generality). Moreover, claim limitations
related to programming devices to communicate and receive information,
like recited step (B), can be considered conventional computer activities.
See OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1361, 1363 (Fed.
Cir. 2015).
To the extent Appellant argues that claim 28 is eligible because
“before the advent of the Internet and cloud computing, there was no such
thing as allowing an individual tenant to subscribe to and access a subset of
cloud services” (Appeal Br. 18), this argument is unavailing. The court in
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DDR cautioned that “not all claims purporting to address Internet-centric
challenges are eligible for patent.” DDR, 773 F.3d at 1258. Aside from
repeating claim language and making conclusory statements (see Appeal Br.
17–18), Appellant has not demonstrated persuasively that claim 28’s
additional elements provide significantly more than the recited judicial
exception. Notably, many of the limitations (e.g., registering a subscription,
generating organization plans, receiving request from tenants to subscribe)
discussed by Appellant (id.) are part of the identified judicial exceptions
(e.g., providing and managing subscription service plans) rather than the
additional elements in claim 28, which, under the Revised Guidance, are
evaluated to determine whether they provide an inventive concept.
Thus, Appellant fails to show sufficiently the recited additional
elements in claim 28 add a specific limitation or combination of limitations
that is not well-understood, routine, or conventional activity in the field. For
the above reasons, the additional recited elements—considered individually
and as an ordered combination—do not add significantly more than the
abstract idea to provide an inventive concept under Alice/Mayo step two.
Conclusion
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of independent claim 28 and claims 21, 22, 24, 29, 31, 35, 36,
and 38 for similar reasons.
CLAIMS 25–27, 32–34, 39, AND 40
Appellant separately argues claims 25 and 26. Appeal Br. 19–21.
Claims 32 and 33 depend from claim 28 and recite limitations commensurate
with claims 25 and 26 respectively. Compare id. at 28 (Claims App’x), with
id. at 26 (Claims App’x). Likewise, claim 39 recites features found in claim
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25, and claim 4013 recites limitations commensurate with claim 26.
Compare id. at 30 (Claims App’x), with id. at 26 (Claims App’x). Claim 27
depends from claim 26, and claim 34 depends from claim 33. Id. at 27, 29
(Claims App’x). We select claims 25 and 32 as representative of claims 25,
32, and 39 and claims 26 and 33 as representative of claims 26, 27, 33, 34,
and 40. See 37 C.F.R. § 41.37(c)(1)(iv).
Revised Step 2A - Prong 1
Claim 25 recite “the organizational subscription includes an
authorization to re-offer one or more of the cloud services provided by the
datacenter according to the organizational subscription,” and claim 32
recites a commensurate limitation. Appeal Br. 26, 28 (Claims App’x).
Claim 26 recites “the organizational subscription includes an authorization
to re-offer one or more of the cloud services provided by the datacenter
according to the organizational subscription and a number of times the one
or more of the cloud services are authorized to be re-offered,”14 and claim 33
recites a commensurate limitation. Id. Each of claims 25 and 26 (and
similarly claims 32 and 33) further limit step (A) of claim 21 (or claim 28)
respectively, specifying what the organizational subscription includes. Thus,
the recited instructions of claims 25 and 26 (or the recited steps of claims 32
and 33), each fall squarely within the certain methods of organizing human
activity or mental processes judicial exception (e.g., providing and managing

13 Notably, claim 40, which is similar to claim 33, also depends from claim
28. Compare Appeal Br. 30 (Claims App’x), with id. at 28 (Claims App’x).
14 We note in passing that “the computer-executable instructions, when
executed by the one or more processors, cause the processors to:” as recited
in claim 26, appears misplaced.
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organizational subscriber service plans) as explained above and therefore,
further limit or recite the identified abstract idea.
Claim 25 and claim 26 (as well as claims 32 and 33) each include an
additional instruction or step reciting “re-offer[ing] the one or more of the
cloud services to tenants in the organization according to the authorization.”
The recited additional instruction or step is an activity which would
ordinarily take place to offer services so that each of the organization’s
tenants can access the claimed services. Thus, the recited additional step in
claims 25, 26, 32, and 33 falls squarely within the certain methods of
organizing human activity or mental processes judicial exception as
explained above and therefore, recite an abstract idea.
For the above reasons, we conclude claims 25, 26, 32, and 33 as a
whole recite certain methods of human activity or mental processes
identified in the Revised Guidance.
Revised Step 2A - Prong 2
The additionally recited element beyond the above-identified judicial
exceptions in (1) claims 25 and 26 (i.e., “the computer-executable
instructions, when executed by the one or more processors, cause the
processors” to perform the certain methods of human activity or mental
processes discussed above) or (2) claims 32 and 33 (i.e., “cloud” services
provided by the datacenter”) are those discussed above concerning claims 21
and 28. As previously stated, these additional elements do not integrate the
abstract idea into a practical application.
Accordingly, claims 25, 26, 32, and 33 do not integrate the abstract
idea into a practical application and, therefore, are directed to an abstract
idea.
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Alice Step Two, Step 2B
Similarly, for the reasons discussed above concerning claims 21 and
28, we do not find that the additional elements in claims 25, 26, 32, and 33
noted previously—considered individually and as an ordered combination—
add significantly more to the abstract idea to provide an inventive concept
under Alice/Mayo step two. See Alice, 573 U.S. at 221; see also Revised
Guidance, 84 Fed. Reg. at 56. Therefore, we are not persuaded that the
Examiner erred in rejecting claims 25, 26, 32, and 33 under § 101.
Conclusion
For the foregoing reasons, Appellant has not persuaded us of error in
the rejection of (1) claims 25, 26, 32, and 33, and (2) claims 27, 34, 39, and
40, which are not separately argued.

CONCLUSION
Claim(s)
Rejected
35 U.S.C. § Basis Affirmed Reversed
21 101 Eligibility,
signal per se
21
21, 22,
24–29,
31–36,
38–40
101 Eligibility,
judicial
exception
without
significantly
more
21, 22,
24–29,
31–36,
38–40

Overall
Outcome
21, 22,
24–29,
31–36,
38–40

AFFIRMED